Concept of Novelty in Patenting System

305 CONCEPT OF NOVELTY IN PATENTING SYSTEM M. Haseeb Javaid Advocate, Lahore Published in: Corporate Law Decisions Year of Publication: 2011 Suggested Citation: 2011 CLD Journal Section p.1 A patent is a monopoly right granted to a person who has invented a new and useful article or an improvement of an existing article or a new process of making an article. It consists of an exclusive right to manufacture the new article invented or manufacture an article according to the invented process, for a limited period. [1] Patent is not a new concept and it has its roots deep in centuries. Constitution of America, which was enacted in 1787, was the first supreme legislation in this world, which had incorporated the rights of authors, and inventors in its body ensuring sufficient protection for the writings and discoveries as basic constitutional protection. A patent is an exclusive right granted for an invention, which is a product or a process that provides, in general, a new way of doing something, or offers a new technical solution to a problem. It is granted in form of a document, issued, upon application, (Cit. p.2) by a government office, which describes an invention and creates a legal situation in which the patented invention can normally only be exploited (manufactured, used, sold, imported) with the authorization of the owner of the patent. The patent is a safe method for protection of an invention for its being copied by the general public, for a limited time. In order to be patentable, the invention must fulfil certain conditions:-- .....Patents shall be available for any inventions, whether products or processes, in all fields of technology, provided that they are new, involve an inventive step and are capable of industrial application. [2] Being "New" is the requirement of patentablility, which must be fulfilled. The term "New" means; (1) not existing before (2) Introduced, made, invented etc. recently or for the first time. And the legal term, used for "quality of being new", is "Novelty".[3] So, in pure legal sense Novelty is the fact that an invention is new in form and in function or performance.[4] Novelty is a fundamental requirement in any examination as to substance and is an undisputed condition of patentability. It must be emphasized, however, that novelty is not something, which can be proved or established; only its absence can be proved. So, "Novelty" has been defined as: An invention shall be considered to be new if it does not form part of the "state of the art"[5] (also known as "prior art"). "State of the art" or "Prior art" is, in general, all the knowledge that existed prior to the relevant filing or priority date of a patent application, whether it existed by way of written or oral disclosure or by making the invention available for public use. The question of what should constitute "prior art" at a given time is one, which has been the subject of some debate. It is clear that "to be part of the state of the art, the invention must have been made available to public".[6] And it was held that "availability..., involves two (Cit. p.3) separate stages... availability of the means of disclosure, and availability of information which is accessible and derivable from such means".[7] The disclosure of an invention so that it becomes part of the prior art may take place in three ways, namely: By a description of the invention in a published writing or publication in other form; By a description of the invention in spoken words uttered in public, such a disclosure being called an oral disclosure; By the use of the invention in public, or by putting the public in a position that enables any member of the public to use it, such a disclosure being a "disclosure by use. The House of Lords stated that: The use of product makes the invention part of the state of the art only so far as that use makes available the necessary information. [8] Even if the subject-matter sought to be patented is not exactly shown by the prior art, and involves one or more differences over the most nearly similar thing already known, a patent may still be refused if the differences would be obvious. The subject-matter sought to be patented, must be sufficiently different from what has been used or described before that it may be said to be non-obvious to a person having ordinary skill in the area of technology related to the invention. For example, the substitutions of one material for another, or changes in size, are ordinarily not patentable. One viewpoint (as is currently the requirement in New Zealand) is that the determination of prior art should be made against a background of what is known only in the protecting country. This would exclude knowledge from other countries, if it was not imported into the country before the making of the invention, even if that knowledge was available abroad before the date of the making of the invention. This concept is called "Local Novelty". (Cit. p.4) In other countries, including European countries, any act that makes an invention available to the public before the filing date or priority date has the effect of barring the invention from being patented. This is known as an "Absolute Novelty" requirement. In some countries, such as the United States and Japan, a grace period exists for protecting an inventor or the successor in title from a publication of the invention before the filing date. That is, if the inventor or the successor in title publishes the invention, an application can still be validly filed which will be considered novel despite the publication, provided that the filing is made during the grace period following the publication. The grace period is usually 6 or 12 months. This type of novelty bar is sometimes known as a "relative novelty" bar. In patent law, a "priority right" or "right of priority" is a time-limited right, triggered by the first filing of an application for a patent. The priority right belongs to the applicant or his successor in title and allows him to file a subsequent application in another country for the same invention and benefit, for this subsequent application, from the date of filing of the first application for the examination of certain requirements. When filing the subsequent application, the applicant must claim the "priority" of the first application in order to make use of the right of priority. The period of priority, i.e. the period during which the priority right exists, is usually 12 months for patents. The period of priority is often referred to as the "priority year" for patents. The grace period should not be confused with the priority year. The priority year starts when the first filing is made, while the grace period starts from the pre-filing publication. There are two systems governing the patent law, regarding there priority right, "first to invent system" and "first to file system". The United States and Canada uses a first-to-invent system. According to this system, provided an inventor is diligent in reducing an application to practice, he or she will be the first inventor and the inventor will remain entitled to a patent, even if another files a patent application before the inventor. Every country other than the United States and Canada uses a first-to-file system. This means that, regardless of who the first inventor was, the person or legal (Cit. p.5) entity who files a patent application first is the one who can be granted a patent for the invention. The first-to-invent versus first-to-file rule is one of the major differences between U.S. and Canada's patent law and the patents systems of other nations.[9] The standard method for discovering if a proposed invention is novel is to perform a "prior art search" or "novelty search". A prior art search may for instance be performed using a keyword search of patent databases. This search is often conducted by patent attorneys, patent agents or professional patent searchers before an inventor files a patent application. A novelty search helps an inventor in determining either the invention is novel or not, before committing the resources necessary to obtain a patent. In Pakistan, law of patents is regulated under The Patents Ordinance, 2000. "Question of "novelty and invention" has to be seen and judged, keeping in view the provisions of S.2 (i) of Patents Ordinance, 2000. Where the "invention" is defined to mean as new and useful product or process in any field of technology; and includes any new and useful improvement of either of them".[10] In the Ordinance concept of novelty is elaborated under section 8, and disclosure to the public is stated in the words "everything disclosed to the public anywhere in the world",[11] so novelty is no more considered with reference to what is publicly known in the territories of Pakistan or what is publicly used in the territories of Pakistan, prior to the date of the patent application. The Public use or knowledge of an invention anywhere in the world before the date of the application would prejudice the novelty of the invention. Applicants for patents should therefore, take particular care to see that their inventions are not publicly used any where in the world, prior to the date of their patent applications. Publication of the invention should, therefore, be avoided before applying for Patents. ; Patent rights were denied to an inventor of an improved design of ballpoint, pen, merely on the ground that the inventor himself had published a description of making ballpoint pens and had made two pens embodying the invention available to the (Cit. p.6) members of the public, before filling the patent application. ; A new method of producing nylon with evenly distributed carbon black content was not granted patent of the prior publication the information was disclosed through bulletins to the members of the public by the applicant s salesman. There are couple of exceptions available in patent law, regarding the making of information available to public. As, the novelty of a patentable invention in respect of goods would not be prejudiced if an article is exhibited at an official or officially recognized international exhibition within twelve months preceding the date of filing of an application for grant of patent. If later on, the right of priority is invoked, then the period shall start from the date of introduction of the article into the exhibition.[12] An other exception is secrecy agreement . Information kept secret, for instance as a trade secret, is not usually construct prior art provided that employees and others with access to the information are under a non-disclosure obligation. In case of absence of such an obligation, the information will typically be regarded as prior art. Generally, this means that a patent may be granted on an invention despite the fact that someone else knew of the invention. A person who used an invention in secret may in some jurisdictions be able to claim prior user rights and thereby gain the right to continue using the invention. In European Patent Office (EPO), the Board of Appeal held; However, that the evidence established that all potential customers to whom the invention had been disclosed understood that the information was confidential and that there had been agreement to this effect. An express and specific agreement as to confidentiality was not necessary, because an obligation as to confidence could arise from a relationship of good faith, even if not made orally. The claimed invention had therefore not been made available to the public. [13] --------- [1] Intellectual Property Law 3rd Ed. by P. Narayanan; See also [2005 CLD 1768] [2] TRIPS - Agreement On Trade Related Aspects of Intellectual Property Rights, Article 27(1) [3] Oxford Advanced Learner s Dictionary, 5th Ed. [p. 781, p. 792] [4] Black s Law Dictionary, 7th Ed. [p. 1092] [5] Article 54, European Patent Convention (EPC), 1973; also stated in Quantel v. Spaceward [1990 RPC 83] [6] Merell Dow v. H.N. Norton, [House of Lords, 1996 RPC 76] [7] T952/92 (PACKARD/Supersolve) O.J. EPO 1995, 755 [8] Merrell Dow v. H.N. Norton, [House of Lords, 1996 RPC 76] [9] http://www.wikipedia.com [10] Khawaja Tahir Jamal v. Messrs A.R. Rehman Glass [2005 CLD 1768] [11] Section 8(2)(a), The Patents Ordinance, 2000 (Ordinance No. LXI of 2000) [12] Section 8(3), the Patents Ordinance, 2000 (Ordinance No.LXI of 2000) [13] T830/90 (MACRO MARINE SYSTEMS/Confidentiality agreement) O.J. EPO 1994, 713